Report No. 185

Section 132B

In the 69th Report, in Chapter 72, it was recommended that there should be a separate provision dealing with the privilege of 'patent agents' governed by the provisions of secs. 126, 127 of the Patents Act, 1970. By virtue of these provisions, a patent agent can practice not only in the High Court but also before the Controller-General of Patents, Designs and Trade Marks referred to in section 73 of the Patents Act. A patent agent can prepare all documents, transact all business and discharge other functions prescribed in connection with proceedings before the Controller.

We propose to adopt the format in the UK Act of 1988. The provision regarding privilege of 'patent agents' should be as follows:

"132B. Communication with patent agents. (1) Any communication as to any matter relating to the protection of any patent or as to any matter involving passing off.-

(a) between a party and his patent agent, or

(b) for the purpose of obtaining, or in response to a request for information which a party is seeking for the purpose of instructing his patent agent, is privileged from disclosure in legal proceedings in the same way as a communication between a client and his legal practitioner or, as the case 926 may be, a communication for the purpose of obtaining, or in response to a request for, information which a client seeks for the purpose of instructing his legal practitioner.

(2) For the purposes of subsection (1.-

(a) 'patent agent' means

(i) a patent agent registered as a patent agent in the register of patent agents maintained pursuant to the provisions of the Patent Act, 1970, or

(ii) a partnership entitled to describe itself as a firm of patent agent;or

(iii) a body corporate entitled to describe itself as a patent agent.

(b) 'party' in relation to any contemplated proceedings, means a prospective party thereto.

(c) 'legal practitioner' means a person as defined in Explanation 2 of section 126.

132C. Communication with Trademark Agent.- (1) Any communication, as to any matter relating to the protection of any trademark or as to any matter involving passing off.-

(a) between a party and his trademark agent; or

(b) for the purpose of obtaining, or in response to a request for information which a party is seeking for the purpose of instructing his trademark agent, is privileged from disclosure in legal proceedings in the same way as a communication between a client and his legal practitioner or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a client seeks for the purpose of instructing his legal practitioner.

(2) For the purposes of subsection (1)-(a) 'trademark agent' means

(i) a trademark agent as defined under section 145 of the Trade Marks Act, 1999;

(ii) a partnership entitled to describe itself as a firm of registered trademark agents, or

(iii) a body corporate entitled to describe itself as a registered trademark agent.

(b) 'party' in relation to any contemplated proceedings means a prospective party thereto.

(c)' legal practitioner' shall have the same meaning assigned to it in Explanation 2 of section 126."